NORWAY Trends and Developments Contributed by: Camilla Vislie, Magnus Hauge Greaker, Julie Rasmussen Solli and Amalie Hauge Pedersen, Advokatfirmaet Thommessen AS
mark is well known within the relevant circle of trade in Norway for the associated goods and services as someone’s sign. The District Court concluded that these conditions for protection through use were met, thereby granting Orkla exclusive rights to market porous milk chocolate using Pantone 2144 C. The court emphasised several key points to sup - port their conclusion: • The blue colour does not describe or derive from the characteristics or functions of porous or other types of chocolates, in accordance with Section 2, second para - graph of the Norwegian Trade Mark Act (corresponding to Article 4 no. 1 litra e of the Trade Mark Directive) • Orkla’s claim was limited to porous milk choc - olate, rather than chocolate in general, where Stratos held a market share of 64-100% from 2000 to 2022. • Another factor was Stratos’ long-standing market dominance, combined with the absence of other significant competitors in the porous milk chocolate segment. • The consistent and long-term use of the colour in Stratos’ marketing efforts was also a key consideration. • Market surveys indicated that 71% of the test group and 73% of frequent chocolate buyers associate Pantone 2144 C with Stratos/Orkla. Mondelez’s use of Pantone 2145 C on the packaging of Freia Boble infringed upon Stra- tos’ established exclusive right to use Pantone 2144 C for porous milk chocolate and violated the principle of good business practice among traders After affirming Orkla’s exclusive right to Pan - tone 2144 C, the court assessed whether the
use of Pantone 2145 C on parts of the Freia Boble packaging infringed upon Orkla’s rights under the Trade Mark Act. The court concluded in the affirmative, emphasising that the colour differences between the two blue shades were so minimal that they could easily be overlooked by the average consumer in a shopping context. The court finally determined that Mondelez’s use of Pantone 2145 C on the packaging of Freia Boble violated the principle of good business practice, as outlined in the Norwegian Market - ing Control Act. The District Court noted that Mondelez failed to fulfil its obligation to vary the design of the packaging for Freia Boble, as required by the principle of good business practice. According to the court, Mondelez deliberately selected a shade of blue for Freia Boble that closely resembled the shade used by Stratos, with the intention of exploiting the fact that the relevant circle of trade nationwide asso - ciated this shade of blue with Stratos’ market- leading porous milk chocolate. Consequently, Mondelez was found to have unfairly exploited Stratos’ long-term efforts and achievements by using a colour closely resembling Pantone 2144 C to market its porous milk chocolate. Mondelez was ordered to remove the disputed packaging of Freia Boble from the market and was also required to pay compensation and cov - er legal expenses amounting to NOK20,000,000. The future of colour marks While the decision is merely a District Court rul - ing, it sets a precedent for potential develop - ments in the protection of colour trade marks through use in Norwegian law. Although the Trade Mark Act explicitly states that colours are subject to protection under the Act, the thresh - old for meeting the conditions for protection through use is high for colour trade marks. The
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